Archive for the ‘Interferences’ Category

On February 28, 2012, a three-judge panel of the Fed. Cir. ruled that the Board properly ruled that Monsanto prevailed in interference no. 105,728, involving the patent claims directed broadly to transgenic corn. (A copy of this ruling is found at the end of this post.) Although Pioneer had filed its priority application in 1988, well more than one year before Monsanto filed the 2005 application involved in the interference, the panel found that Monsanto was not barred by 135(b)(1) since earlier applications in the chain of the Monsanto applications that led up to the 2005 application claimed “substantially congruent” subject matter in the aggregate (e.g., broadly claimed transgenic corn). The panel also agreed with the Board that Pioneer’s first application did not contain an enabling disclosure of the claims at issue. The main Monsanto claim is a model of a broad transgenic corn plant claim (the Latin name for what modern corn farmers raise is Zea mays):

In the recent decision of Solvay S.A. v. Honeywell International, Inc. (2009-1161, Fed. Cir. 2010), the Federal Circuit held that despite both being first to possess an invention in the U.S. and practicing reasonable diligence prior to filing, Honeywell did not receive priority under 35 U.S.C. § 102(g)(2), because the invention was first made in Russia by an agency under a contract with Honeywell (then Allied Signal). As a result, despite Solvay being the second to invent, the District Court’s finding of invalidity of Solvay’s U.S. Patent No. 6,730,817 was reversed, and the finding of infringement by Honeywell was affirmed.

Even if a goal of 35 U.S.C. § 102(g)(2)’s requirement that “before such person’s invention thereof, the invention was made in this country by another inventor…” is to protect and favor U.S. businesses, it seems like the wrong result when a U.S. company creates an invention abroad via a contractual business relationship and is not awarded priority over another company that independently invents the same invention second in time.

Honeywell had not publically disclosed the invention; it was kept secret within the company. Thus the provision of 35 U.S.C. § 102(a) that “the invention was known or used by others in this country…” did not apply. As discussed in the M.P.E.P. at 2132.01(I), “known or used” in § 102(a) means publicly known or used. If Honeywell had disclosed or used the invention this way, then § 102(a) would have applied, but it would have started the § 102(b) clock as well. Additionally, and perhaps more importantly, such a disclosure would have resulted in the loss of foreign filing rights in most countries.

The business relationship between Honeywell and the Russian agency didn’t allow Honeywell to successfully argue that a business organization located in the U.S. made the invention first, and 35 U.S.C. § 102(g)(2) requires the invention to be made “in this country”. For companies that choose to outsource inventing activities abroad, a solution is to rapidly file a PCT application designating the U.S., perhaps preceded by a national stage filing in the country in which the invention was made. By treaty, a PCT filing in English designating the U.S. is treated like a regular U.S. filing for priority purposes. However, this clearly gives companies that invent in the U.S. an advantage, as they can seek the protection of § 102(g)(2), and can thus potentially withhold an invention from the public for a longer period of time with less worry. The U.S. inventor will need to be vigilant to ensure no § 102(b) disclosures occur, but otherwise they need only be reasonably diligent prior to filing. This could allow companies that invent in the U.S. to be more selective about what they ultimately seek to patent, and to bring an invention to a more highly finished state at the time of patenting, which can increase the quality and corresponding value of granted patents. Even a slight time advantage can be extremely important for inventions that bring in the highest profits near the end of their patent term, such as pharmaceuticals.

But with the tremendous amount of outsourcing of traditional U.S. business of late, with cost savings at the root, perhaps we should be happy with interpretations of U.S. Patent Law that counteracts this outward flow?

The commentary presented herein represents the opinions of the author and not of Schwegman Lundberg & Woessner, P.A. or any other employee thereof. This commentary is provided for general informational and discussion purposes and should not be considered to be, or used as, legal advice to address any particular situation.
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